TTAB Affirms Genericness Refusal of CHOCOLATE GLAÇAGE for .... Guess What?

The TTAB affirmed a refusal to register CHOCOLATE GLAÇAGE on the Supplemental Register, finding the phrase to be generic for "icing and glaze for cakes, pies, donuts, and bakery goods." For icing on the cake, the Board also affirmed a refusal based on applicant's failure to provide a translation of the word GLAÇAGE. In re Lawrence Foods, Inc., Serial No. 86937640 (July 20, 2017) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Ty Murray submitted a dictionary definitions of "chocolate," and the Board took judicial notice of this dictionary definition of GLAÇAGE: "glaçage (France): Icing or glazing with an egg wash."

The Examining Attorney also provided examples recipes and menus that included the phrase "chocolate glaçage to designate chocolate icing or glaze for bakery goods, primarily cakes. A summary printout of Google search results submitted by applicant also showed the phrase in reference to recipes for making icing.

The record shows that the compound term CHOCOLATE GLAÇAGE is understood by the relevant public – that is, bakers and buyers of cakes, pies, donuts, and bakery goods with icing and glaze – primarily to refer to the genus of Applicant’s goods. The genericness of the phrase, considered as a whole, is established by ... clear and convincing evidence ....

Applicant feebly claimed that "no important website" uses the phrase, and a mere 7,840 Google hits actually evidence "low use." The Board pointed out that even if applicant were the first and only user of the phrase, the issue is what the public would understand the phrase to mean, not whether the public uses the phrase.

The correct inquiry thus is whether the relevant public would understand, when hearing or reading the term CHOCOLATE GLAÇAGE, that it refers to “icing and glaze for cakes, pies, donuts, and bakery goods.” The record demonstrates such an understanding among bakers and buyers of cakes and other bakery goods with icing and glaze.

As to the translation requirement, applicant, after agreeing that the doctrine of foreign equivalents does not apply, "incorrectly assumes that if the doctrine of foreign equivalents does not apply, a translation is unnecessary. To the contrary, one is not dependent on the other.

Application of the doctrine of foreign equivalents is a matter of substantive trademark law, while the requirement for translation of the wording in the mark is an administrative requirement for registration under Rule 2.32(a)(9). Applicant’s argument also puts the cart before the horse: The translation of foreign wording in the mark usually must be considered before determining whether the relevant public would “stop and translate” it when considering the mark.

Observing that a translation is of critical importance because it provides public notice of the meaning of the words in applied-for matter, the Board found the requirement for translation of GLAÇAGE for the record to be appropriate.

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TTABlog comment: WYHA? The CAFC affirmed this decision  on December 13, 2018, under Fed. Cir. Rule 36 (no opinion)

Text Copyright John L. Welch 2017.